Copyrights

On January 30, 2018, the USC Gould Law School presented “The Future of Fashion,” a panel discussion co-hosted by the IP & Technology Law and Art Law Societies at USC. Conkle, Kremer & Engel attorney Aleen Tomassian was one of the expert panelists invited to discuss the current state of intellectual property law as it affects the fashion industry, and to discuss how recent court decisions affect the future of the industry.

USC Panel – Aleen Tomassian (Center)

A major point of discussion involved the impact of the Supreme Court’s recent Varsity Brands v. Star Athletica decision, a copyright case that concerned design features on cheerleading uniforms. Historically, articles of clothing have not generally afforded copyright protection because they are considered “useful articles.” But the Supreme Court held that the design features of the uniforms in issue were protectable because they were works of art which could be imagined separately from the useful article into which they were incorporated. Many have suggested that the holding in Star Athletica signals that broad copyright protection would be available for articles of clothing. But the USC panel discussion made clear that Star Athletica affirmed that copyright protection is available for designelements as distinct from “useful articles,” and the recognized protection is not available to clothing in general.

The panel addressed the unique intellectual property issues that the fashion industry faces. There was a broad discussion about the economic and moral impact of “copycat” designs on society and the effects of “knockoffs” on innovation. Since fashion designs are not specifically protected under U.S. law, the conversation highlighted how attorneys skilled in fashion law use a combination of available forms of protection, including copyright, trademark, trade dress and design and utility patents. A recent example is the pending case of Puma SE v. Forever 21, Inc., USDC Central District of California Case No. 2:17-cv-02523, in which Puma asserts that it has distinctive shoe designs in a line called Fenty Shoes that is promoted by singer Rhianna. Puma contends that Forever 21 engaged in deliberate copying of some of its Fenty Shoes designs, notably the popular “Creeper”, “Fur Slide” and “Bow Slide” models. To protect its designs, Puma alleged infringement of design patents, trade dress and false designation of origin under the Lanham Act, and copyright. Puma’s copyright claims attempt to leverage the Star Athletica decision by contending that certain elements of the Fenty Shoes “can be perceived as a two- or three-dimensional works of art separate from the Fenty Shoes” and “would qualify as protectable pictorial, graphic, or sculptural works – either on their own or fixed in some other tangible medium of expression.” Under the Star Athletica standard, to allow this type of copyright infringement claim, the court will have to determine that “the separately identified feature has the capacity to exist apart from the utilitarian aspects” of the shoe. “If the feature is not capable of existing as a pictorial, graphic, or sculptural work once separated from the useful article” – the shoe – then it is a utilitarian feature and not subject to copyright protection.

The attorneys at Conkle, Kremer & Engel have years of experience navigating the complex legal and intellectual property issues faced by clients in the fashion industry. Our attorneys help clients protect their brands to ensure their continued success in this demanding and fast-paced industry.

As the holiday shopping season reaches peak fervor and consumers seek out the best deals available on hot products, gift-givers are more at risk of purchasing counterfeit products of all kinds. Recently, news articles have warned of counterfeit Fingerlings – the latest “it” toy – along with fake versions of popular electronics, clothing, personal care products, and many other types of goods. Government bureaus like the U.S. Customs and Border Patrol regularly release holiday bulletins advising of the escalating volume of phony products entering the United States (for example, https://www.ice.gov/news/releases/buyer-beware-counterfeit-goods-and-holiday-shopping-season). Counterfeits are far from harmless. Not only are these counterfeit goods generally inferior to authentic products in both quality and safety, fake products are fraud, theft, and infringements of valuable trademarks and other intellectual property. Sales of counterfeit products can even be criminal.

As a consumer, what can you do to help ensure you’re receiving the genuine article? The most obvious method is to avoid unfamiliar sources and to buy directly from the manufacturer’s website or from an authorized retailer whenever possible. If buying on websites like Amazon and eBay (where products are often actually sold by unrelated third parties), it helps to make sure that the seller of the product is the manufacturer or Amazon itself, not an unknown third party. Often times, third party sellers do not have the ability or desire to properly perform checks on the goods they are selling, and in many cases the third party sellers never actually possess the products – when they receive your order they simply forward the product from a warehouse they have never even seen. While outlets like Amazon and eBay have some anti-counterfeiting policies and procedures, experience has shown that not every fake product will be screened out. Consumers should also check the price of the goods to ensure that it is not abnormally low, and examine the packaging and presentation of the product as depicted on the website to help determine whether the product might be fake or foreign-labeled goods. Compare the look of the product offered with the same product on the manufacturer’s website – if it’s different, that’s a red flag. Consumers should also not hesitate to contact the manufacturer if they suspect that they have received counterfeit or foreign-labeled goods – in addition to being the primary victims, consumers are often the first line of defense in the fight against counterfeiting.

As a manufacturer or trademark owner, what can you do when you discover your products being sold in an unauthorized channel, with risk of counterfeiting? Conkle, Kremer & Engel has extensive experience helping manufacturers and distributors to investigate and, when necessary, litigate counterfeit and other trademark- and intellectual property-infringement claims. CK&E attorneys are well-versed in the careful initial steps that should promptly be taken when sales of illicit products are suspected. If the seller is cooperative, litigation can often be avoided. But if the seller is not, that is a strong indicator that the seller has been selling, and will continue to sell, infringing products unless stopped through litigation. Whatever you choose to do, consult experienced counsel and decide on your course of action promptly – unreasonable delays can seriously harm your ability to protect your rights.

On August 13, 2017, Conkle, Kremer & Engel attorneys Amanda Washton, Desiree Ho, Aleen Tomassian, Heather Laird and paralegal Chelsea Clark attended Beautycon in Los Angeles, both to assist clients and to observe first-hand the latest trends in the beauty industry. In addition to the thousands of youthful fans and future beauty marketing gurus in attendance, more than 100 brands and over 70 “creators” were featured at the two-day festival.

An annual gathering, Beautycon serves as a space for beauty industry participants to interact with young fans. As the popular beauty ideal moves away from the conventional toward one that is more inclusive and identity based, with the help of a talented team of influencers Beautycon advocated for authenticity – a sentiment to which all attendees could relate.

Beautycon heavily emphasized the growing trend of using social media influencers and celebrity endorsements to connect with consumers. In exchange for a prized “like” on Instagram, many vendors gifted product samples or even full product lines. Beautycon exemplified the partnerships that are possible between beauty businesses and social media influencers. There were plenty of celebrities, “exclusives” and photo-ready backdrops on hand for influencers’ selfies and videos. There were a number of forward-thinking panels on social media topics, including using beauty-oriented social media platforms to deliver positive self-esteem and diversity messages. Beautycon demonstrated that connecting brands with social media influencers is rapidly becoming vital to the success of emerging beauty businesses.

For businesses, working with social media influencers involves a host of practical and legal issues and considerations. Areas of concern can include contracts, copyrights, trademarks, privacy, rights of publicity, false advertising claims, regulatory issues and even trade libel and defamation, among other issues. With continually evolving social media platforms and issues, it is essential that cosmetics and personal care products companies fully consider the implications of both their social media activities and those of the influencers they seek to help them promote their brands. CK&E attorneys are excited to participate in dynamic events like Beautycon to help their beauty industry clients meet their needs in the shifting landscape of social media. (And as the photos show, it doesn’t hurt to partake in a little of the fun, either.)

Once again, Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim have been honored to participate in and contribute to the revolutionary Beauty Industry Market Access (BIMA) program, led by beauty industry guru Patty Schmucker of American Made Beauty. BIMA is a multi-day intensive domestic and international trade and business education program taught by leading health and beauty industry experts. BIMA participants focus on key principles essential to expand their personal care products businesses both in the U.S. and overseas.

Mark contributes to the BIMA educational program by teaching modules on domestic and foreign intellectual property protection and international distribution agreements. Participants are particularly advised about cost-effective methods of protecting their intellectual property internationally, such as international trademark registrations through the Madrid System, which can offer a centralized application process for trademark registration in over 90 countries based on a brand owner’s domestic application or registration. Kim adds her expertise in domestic regulatory compliance, including Prop 65, California Organic Products Act (COPA), Safe Cosmetics Act, California Air Resources Board (CARB) regulations and survey requirements, and federal and state Made in the USA regulations.

BIMA is sponsored by Universal Companies, which has been in the beauty industry for over 18 years and is an important distributor of more than 300 brands in the spa, salon, esthetics and massage market, as well as their own proprietary brands.

In partnership with the California Trade Alliance (CTA), access to international trade shows are available to companies that participate in the BIMA programs. BIMA participants can exhibit in the popular California Pavilion regularly sponsored by CTA at Cosmoprof Bologna and Cosmoprof Hong Kong, among the world’s largest and most important beauty industry trade shows.

Conkle, Kremer & Engel attorneys John Conkle and Kim Sim will attend the Cosmoprof event for the Asia Pacific region in Hong Kong on Nov. 12-14, 2014. Cosmoprof Asia will feature more than 2,350 exhibitors in the beauty industry, and expects more than 64,000 visitors from all over the world. There will be 22 national and group pavilions. Given the prominence of California’s personal care product industry, CK&E is proud to attend the Hong Kong event in association with the California Pavilion organized by the California Trade Alliance. CK&E will meet with clients and correspondent counsel to facilitate business between manufacturers, distributors and vendors in the Asia Pacific region and the United States, with particular emphasis on California businesses. Brand protection and distributor relations are always a major concern when doing business between the U.S. and Asia, and CK&E attorneys are there to help. If you will be attending Cosmoprof Asia this year, please let us know and we will try to make arrangements for a meeting at the event.

Confronting product counterfeiters can be an expensive, labor intensive and sometimes frustrating task, particularly when undertaken as a solo effort. The panel sponsored and moderated by CK&E will highlight strategies for combining the strength of private enforcement and available public sector resources to combat counterfeiters using all available tools. The panel will assess when and how to use civil resources in partnership with criminal enforcement for the most effective and cost-effective assault on product counterfeiters. The panel will address practical steps to best leverage the strengths and resources of both arms against the scourge of counterfeiters, illustrating points with real world experiences.

Join us and learn how to get the most bang for your brand protection buck in the battle to defeat counterfeiters. CK&E is proud to again sponsor this important brand protection event.

The conference features speakers from leading companies in the technology industry, including Google, Facebook and Twitter, as well as representatives from federal and global regulatory organizations, such as the World Intellectual Property Organization (WIPO), U.S. Department of Commerce and the Internet Corporation for Assigned Names and Numbers (ICANN).

Every business is affected by developments regarding the Internet. CK&E participates in important industry conferences of INTA and others to stay in the forefront of developing issues affecting the firm’s clients. Check back for blog post updates from the conference to stay abreast of innovations and changes in governance and brand protection on the Internet.

It is virtually impossible to get through a day without seeing the “right of publicity” in action. Everywhere, there are advertisements featuring photographs of professional models and celebrities of every variety published to sell all types of products and services. It is strange, then, that no statute or case precedent in California specifically established that models and celebrities have the ability to assign or license those publicity rights for proper use and for enforcement if their likenesses are misused. Until now.

On September 12, 2014, the California Court of Appeal agreed with the arguments of Eric Engel of the Conkle Firm (working with co-counsel at Hall & Lim), and established the first published precedent in California that explicitly holds that the right of publicity is assignable. In Timed Out, LLC v. Youabian, Inc., Case No. B242820, the Second District Court of Appeal finally settled a long-simmering dispute that had confused many lower courts: Whether the right of publicity is a “personal right” that can only be exercised during lifetime by the individual owner, or whether the right of publicity is a form of intellectual property that can be freely assigned and licensed to others for use and enforcement.

The dispute had its origin many years ago, when an influential tort law treatise by famed Professor Prosser observed that the right of publicity historically derived from the “right of privacy.” The classic form of the “right of privacy” is protection against hurt feelings and injury to personal reputation that can occur when personal information about a private individual is published without her consent. That type of injury is considered personal in nature and cannot generally be assigned. But, as the Timed Out decision observed, the right of publicity has evolved away from its origin into a distinctly commercial and non-personal interest.

The right of publicity is now virtually the opposite of the original right of privacy: The right of publicity is the ability of a person to control the commercial value of the use of her image and information. Timed Out recognizes that a person’s likeness, voice, signature or other identifying characteristics can have substantial commercial value, regardless of whether the person is a celebrity and regardless of whether the commercial value of the identified person’s “persona” is created by happenstance or by investment of great time and effort. Timed Out finally establishes that the value created is a form of property, freely assignable by the person who owns it.

The Court of Appeal also resolved a separate important issue that is frequently in dispute in right of publicity actions: Whether federal copyright law subsumes and preempts right of publicity claims. Timed Out v. Youabian established that the right of publicity is distinct from copyright interests in a photograph or image, and that right of publicity claims generally are not preempted by federal copyright laws.

The effect of Timed Out LLC v. Youabian, Inc. for models, celebrities, manufacturers, advertisers and resellers is to finally establish that the right of publicity can be licensed and assigned to third parties, and enforced by third parties such as Timed Out, and that such rights are independent of federal copyright interests. That means models and celebrities no longer have to make the difficult decision whether it is worth their time, expense and effort to pursue claims when their publicity rights are violated – they can assign the affected publicity rights to agencies such as Timed Out to pursue the claims. Manufacturers, advertisers and resellers will no longer waste effort and time attempting to determine whether the publicity rights were assignable. They can and should instead focus on establishing whether they had the necessary rights to use the image, photograph, likeness, voice or other identifying characteristic of the “persona” of the model or celebrity. This puts a premium on making sure that any “model releases” obtained prior to advertising are well-written and appropriate for each particular use of the model or celebrity’s photograph, image, likeness or other identifying features.

Conkle, Kremer & Engel counsels and helps clients avoid these kinds of issues with effective model releases, licenses and assignments. Timed Out v. Youabian demonstrates that CK&E is also at the forefront of enforcing the right of publicity when model and celebrity rights are violated.

What do Manuel Noriega, Lindsay Lohan and the rock group No Doubt have in common? All of them have sued videogame makers for infringement of their rights of publicity. On July 15, 2014, Manuel Noriega sued videogame maker Activision Blizzard in Los Angeles Superior Court when his name and animated likeness were included in the videogame Call of Duty: Black Ops II. Less than two weeks earlier, Lindsay Lohan filed a Complaint alleging that her likeness was used, under a pseudonym of “Lacey Jonas,” in the Rockstar Games videogame Grand Theft Auto V. No Doubt alleged that Activision exceeded the consent it gave for use of band members’ likenesses as avatars in the videogame Band Hero.

These claims seem to be emblematic of a recent upswing in claims of violations of the “right of publicity”. One prominent example is Davis v. Electronic Arts, a case on behalf of some 6,000 retired pro football players who are suing Electronic Arts over use of their identities in the Madden NFL video game series. In arguments pending in the Ninth Circuit Court of Appeal, Electronic Arts claims First Amendment protection for claimed “transformative use” of the players’ images. Even if that argument were successful, it will not likely be of much help to others who simply use a photograph or other unadorned likeness of an individual.

California and most other states recognize that a person has a right to protect his or her name, likeness, signature, voice and other identifying aspects of personae from commercial exploitation without consent. The right of publicity protects not just photographs but all forms of likenesses, including animated versions of people in videogames. The right of publicity is a type of intellectual property – in some ways analogous to (but not the same as) a trademark. An important point to understand is that the right of publicity is not ordinarily precluded simply by ownership or license of the copyright in the image – even if you took a photo of Lindsay Lohan yourself and you own the copyright in that photograph, that in itself generally does not mean you can use it in an advertisement to sell a product without Lindsay Lohan’s consent.

The right of publicity is distinct from rights protecting against slander or defamation – there is no requirement that a person’s reputation has been harmed in any way, or that he or she ever had a positive reputation. Manuel Noriega is probably best known as a former leader of Panama who was deposed, tried and convicted of drug trafficking, racketeering and money laundering. Nonetheless, Manuel Noriega has the same right to prevent others from commercially exploiting his name and likeness as anyone.

An important and often overlooked aspect of the right of publicity is that it is a right held by everyone – not just celebrities. While celebrities presumably may command more money for the commercial use of their identities, everyone has the same right to protect his or her name from commercial exploitation without consent, regardless of previous anonymity.

This is a particularly important lesson for businesses that might be inclined to scour the Internet, copy a photograph of some unknown model and use it in advertising or packaging. In addition to the risk that unauthorized copying and use might violate a copyright in the photo, such unauthorized use for commercial promotion runs a strong risk of violating the model’s right of publicity and giving rise to a claim for damages. Even a business that has ordered a photo of a professional model specifically for use in advertising or packaging would do well to check whether the model signed a release that covers the particular use, because model releases can differ in scope, duration and effect.

Conkle, Kremer & Engel has been involved on both sides of the right of publicity – defending actions by models against companies who thought they had sufficient releases of the models’ rights of publicity, and asserting models’ rights to be compensated for the commercial value of their likenesses. CK&E attorneys stay current on the developing law of the right of publicity, which is a quickly expanding area of law affecting everyone from manufacturers and marketers to models, celebrities and ordinary people.

There are some containers that have achieved trademark status. Among the most famous are the Coca-Cola bottle and the OPI nail lacquer bottle. Ownership of a trademark in container design requires a solid showing of secondary meaning, which generally takes considerable time, sales volume, and promotional efforts. Ownership of a copyright in a new creative work, on the other hand, is automatic. Copyright registration is usually quick and inexpensive.

So why not protect a container design through copyright? Because a container design that is functional is not copyrightable.

According to the Ninth Circuit Court of Appeals in its recent decision of Inhale, Inc. v. Starbuzz Tobacco, Inc., a case about a copyright claim on a hookah water pipe, copyright protection is not available for functional features of a useful article like a bottle or a chair. As a “useful article,” the shape of a container (including a hookah pipe) is copyrightable “only if, and only to the extent that, [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the container.” 17 U.S.C. § 101.

Courts have said that the non-functional, sculptural features must be “conceptually” or “physically” separable from the container in order to be protected by copyright. “Physically separable” is an easy concept – a printed label or a fancy emblem that is applied to the container can usually be protected by copyright, because it can exist separately from the container. “Conceptually separate” is more esoteric. The Ninth Circuit held that “the shape of a container is not independent of the container’s utilitarian function – to hold the contents within its shape – because the shape accomplishes the function.” In other words, as long as the shape of the container merely holds the container’s contents, the shape is not subject to copyright.

The Ninth Circuit left unanswered whether a “ring shape” that is molded into the bottle but does not conform to the interior container might be copyrightable as “conceptually separate” from the functional container. In any event, the Court’s lesson seems to be that, for copyright protection for a container, the copyrighted feature should serve no purpose in holding the contents. Conkle, Kremer & Engel attorneys regularly work with clients to most effectively secure and protect their valuable intellectual property, regardless of whether it’s a traditional trademark, artwork, a fragrance or a container.